Ninth Circuit Gleefully Rejects Copyright Claims against California High School
Affirming a district court’s summary judgment in favor of various defendants, including the vocal music director and parent volunteers at Burbank High School (whose competitive show choirs reportedly inspired the television series “Glee”), the US Court of Appeals for the Ninth Circuit examined issues of standing via copyright ownership and the copyright infringement defense of fair use. The Court, however, reversed the lower court’s denial of defendants’ attorneys’ fees and remanded for the calculation of an appropriate award in view of plaintiff’s “objectively unreasonable” arguments in the lawsuit. Tresóna Multimedia, LLC, v. Burbank High School Vocal Music Association, et. al., Case No. 17-56006 (9th Cir., Mar. 24, 2020) (Wardlaw, J.).
Arizona-based licensing company Tresóna Multimedia, LLC, filed copyright infringement claims against the Burbank High School music director, as well as the school’s booster club and others, citing infringing performances by one of the school’s competitive show choirs, which arranged segments of copyrighted sheet music from four different musical works in which Tresóna claimed to be the “only authorized issuer” of the rights in those musical works. Defendants immediately moved for summary judgment, and the district court granted the motion, finding that the educator-defendants had qualified immunity from suit as to one of the asserted songs, and that Tresóna lacked standing to sue for the other three asserted musical works since Tresóna could not demonstrate anything more than non-exclusive rights in the works. The district court denied the defendants’ motion to recover their attorneys’ fees under Section 505 of the Copyright Act. Both parties timely appealed.
The Copyright Act grants standing to sue for infringement only to the legal or beneficial owner of an exclusive right under copyright. Under this framework, the Ninth Circuit panel examined Tresóna’s copyright interests in the songs “(I’ve Had) The Time of My Life,” “Hotel California” and “Don’t Phunk With My Heart” and found that Tresóna had been granted a license from only one individual co-owner of the songs without the consent of the other co-owners. Thus, under the Copyright Act, Tresóna’s non-exclusive licenses in the otherwise jointly owned works deprived Tresóna of the exclusive rights required for standing to sue for infringement of the three songs.
Turning to Olivia Newton John’s “Magic,” the fourth song at issue, the Ninth Circuit affirmed the district court’s grant of summary judgment against Tresóna, but on grounds of fair use, instead of the district court’s finding of qualified immunity. The Court first noted that the music director’s use of the musical work for educational purposes in his capacity as a teacher qualified as fair use under certain categories enumerated in the Copyright Act. The Court further explained that the enumerated categories are “illustrative” only, thus also requiring an analysis of the four fair use factors.
The first fair use factor, “the purpose and character of use,” was held to favor the defendants, since arranging segments of the copyrighted work was considered transformative. Specifically, the Court pointed to the resulting 18-minute-long competitive choir performance for nonprofit educational purposes, which was found to be an “entirely different theatrical work” with new expressive content and meaning when compared to the copyrighted song at issue. The second fair use factor, “the nature of the copyrighted work,” was found to weigh against fair use given the “undoubtedly creative” nature of the original arrangement of the song, “Magic.”
The third fair use factor looks at “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” and the Ninth Circuit ultimately found this factor to weigh in favor of the defendants. Despite using the chorus – a “central element” of the song – the Court explained that the defendants incorporated only 20 seconds of the four-minute song into a larger, transformative show choir piece. Finally, the Court found the fourth factor, “the effect of the use upon the potential market for or value of the copyrighted work,” favored the defendants because the transformative nature of the work could not displace the market for the song’s sheet music and Tresóna was not harmed by the loss of any licensing fees.
The Ninth Circuit reversed the district court and granted defendants’ attorneys’ fees, but remanded for an award calculation under §505 of the Copyright Act, which awards a “reasonable attorney’s fee” and costs to the prevailing party so long as such an award furthers the Copyright Act’s “essential goals.” In finding this a suitable case for attorneys’ fees, the Court cited defendants’ complete success on their fair use defense, Tresóna’s “objectively unreasonable” arguments in the face of settled case law and Tresóna’s overzealous and aggressive litigation strategy against a public school teacher and parent volunteers. The Court, therefore, affirmed the grant of summary judgment in favor of the defendants and reversed the denial of attorneys’ fees under 17 U.S.C. § 505.